HTP Graphics

IP-Workbook-2014

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Emily's Spin-out Company SOLUTIONS What concerns would Lakeland have about the assignment? n The definition of 'Intellectual Property' is fairly broad. Lakeland really needs to know exactly what it is assigning and so should aim to list in as much detail as possible what it is transferring. The patent is easy as it has a registration number but Lakeland needs to be more specific about things such as know-how. n The assignment is with 'full title guarantee'. This implies some quite onerous warranties. Lakeland should only be assigning such right, title and interest as it has in the IP. The Further Assurance clause is also too wide as it talks about 'vesting in the Assignee all relevant rights in the Intellectual Property'. It should say 'vesting in the Assignee the rights in the Intellectual Property assigned under this Assignment'. What concerns would Lakeland have about PlanCan? n PlanCan is a new company with few assets other than the IP which it is obtaining from Lakeland. Lakeland may decide that in the early stages it may be better to license the IP to PlanCan rather than assigning it. If PlanCan gets into financial difficulties and becomes insolvent, Lakeland could have a provision in the licence allowing it to terminate the licence, so that Lakeland gets the IP back. This might not be an option though if PlanCan is getting third party money invested into it, such as by a venture capitalist. The investor may insist on an assignment. What assurances does PlanCan need from Lakeland regarding the IP? n PlanCan will want to know that Lakeland has not previously assigned or licensed the Intellectual Property to anyone else. 70

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